Q&As

If Company A was selling a product with their brand name to Company B as part of a business solution which they managed, could Company A include a provision in the contract to obtain the right to remove the branding of the product once the contract is terminated?

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Published on LexisPSL on 10/11/2016

The following IP Q&A provides comprehensive and up to date legal information covering:

  • If Company A was selling a product with their brand name to Company B as part of a business solution which they managed, could Company A include a provision in the contract to obtain the right to remove the branding of the product once the contract is terminated?
  • Trade mark licensing generally

If Company A was selling a product with their brand name to Company B as part of a business solution which they managed, could Company A include a provision in the contract to obtain the right to remove the branding of the product once the contract is terminated?

In such a situation, it would be common practice for the parties to enter into a trade mark licence agreement, either as a separate document, or as part of the contract relating to the business solution. There would be nothing to stop Company A from including a provision in such a licence requiring company B to cease the use of its brand name once the licence is terminated.

We refer you to Precedent: Trade mark licence—pro-licensor. In particular, we draw your attention to clause 16.9.3 of this Precedent which states as follows:

'16.9 In the event of termination of this Agreement for any reason, or on the expiry of the Licence Term:

16.9.3 the Licensee shall immediately cease using the Trade Marks and remove all references to the

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